William Adams is a musical performer who is more famously known by his stage name, will.i.am. A recent ruling from the United States Patent and Trademark Office, Trademark Trial and Appeal Board, unfortunately makes him a two-time loser at the USPTO. The case, In re i.am.symbolic, llc, Serial No. 85916778 (TTAB, August 8, 2018) (precedential), is Mr. Adams’s second failed attempt to register a brand name.

Like many musical artists, Mr. Adams seeks to launch a fashion brand encompassing clothing, jewelry, handbags, cosmetics, and various accessories. Sometime in 2013, Mr. Adams settled on the brand name “I AM” and filed trademark applications with the USPTO. Those trademarks were denied registration based on a likelihood of confusion with prior registered marks. The Board affirmed. See In re i.am.symbolic, llc, 116 U.S.P.Q.2d 1406 (T.T.A.B. Oct. 7, 2015) (Symbolic I); In re i.am.symbolic, llc, No. 85044495, 2015 WL 6746544 (Oct. 7, 2015) (Symbolic II); In re i.am.symbolic, llc, No. 85044496, 2015 WL 6746545 (Oct. 7, 2015) (Symbolic III). The Federal Circuit also affirmed. In re i.am.symbolic, llc, (Fed. Cir. Aug. 8, 2017).

Accordingly, Mr. Adams settled on a new possible brand name: #WILLPOWER. This mark was refused based on a likelihood of confusion, albeit with a different prior registered mark:

Mr. Adams’s argument that consumers would recognize that the Applicant’s mark refers to him personally, and that its goods are purchased by his fans, did not persuade the Board.

Likelihood of Confusion:

When the question is likelihood of confusion, the Board proceeds under the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). Citing Mr. Adams’s previous cases, the Board reiterated that in any likelihood of confusion analysis, the two key considerations are the similarities between the marks and the similarities between the goods.

Similarity of the Goods/Channels of Trade/Consumers

Because the goods were largely identical, the Board presumed that they travelled in the same channels of trade to the same classes of consumers. Applicant explained that:

[I]ts “founder is Will Adams, who is known globally under his stage name WILL.I.AM as the front man for the Grammy Award winning and platinum winning musical group The Black Eyed Peas and as a soloist in his own right [and] Mr. Adams’ fourth music album is titled ‘#willpower.’” (Citation to trial brief omitted). Applicant argues “[t]he goods are targeted to, and purchased by, wholly different consumers, namely, consumers seeking merchandise in connection with Applicant’s album and with Applicant. Because each party’s respective goods are not marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, it is highly unlikely that consumers would confuse Applicant’s goods and Registrant’s goods.” (Citation to trial brief omitted).

The Board recognized, however, that the actual channels of trade or any other marketing limitations were not described within the four corners of the identification of goods in Mr. Adams’s application. The cited registration also contained no limitations. In other words, while there may be an argument that Applicant’s consumers may recognize the brand as being associated with will.i.am, that it not obvious or apparent when viewing the application itself.

Moreover, in In re i.am.symbolic, llc, 123 USPQ2d 1744 (Fed. Cir. 2017), aff’g, 116 USPQ2d 1406 (TTAB 2015), the Board considered the same express limitation to goods “associated with William Adams, professionally known as ‘will.i.am,’” ruling that because the cited registrations contained no restriction as to trade channels or consumers, Mr. Adams’s “will.i.am restriction does not distinguish the mark sufficiently from the registrants’ marks to overcome the evidence of likelihood of confusion.”

Similarity of the Marks in Appearance, Sound, and Overall Commercial Impression

It is well established that when the goods are identical, a lesser degree of similarity between the marks is necessary to establish a likelihood of confusion.

The Board found that the word “WILLPOWER” in Applicant’s mark dominated the overall look, sound, and commercial impression, conveying a stronger commercial impression than the # symbol. As to the cited mark, the Board observed “the verbal portion of a word and design mark [that] likely will be the dominant portion.” The design of stylized mountains in Registrant’s mark “does not overwhelm, detract from, or change the commercial impression of, the wording WILLPOWER WEAR and HAVE THE WILL, but rather serves as an upper border that attracts the eye to the wording WILLPOWER WEAR. The mountains also resemble stylized W’s, focusing attention on the alliterative wording WILLPOWER WEAR, immediately beneath them, as the source identifier.” The addition of the slogan HAVE THE WILL to the cited mark was seen to reinforce the word WILLPOWER.

Applicant contended that #WILLPOWER had a different connotation that the word “WILLPOWER” in the cited registration because in the applied-for mark the word “WILL” was “meant to play on” the first portion of the “will.i.am” stage name. The Board, however, considered the perception of Applicant’s mark by consumers who are not familiar with will.i.am, and who would take from Applicant’s mark the ordinary word “willpower.” The Board declined to afford the hashtag portion of the mark any source-identifying weight, citing the Trademark Manual of Examining Procedure § 1202.18 (which discusses the impact of the addition of a # character to a word).

Ultimately, the Board found the dominant element in the involved marks to be the word WILLPOWER, and it concluded that the similarities in the marks outweighed the differences, and rejected the application.

This was by no means a clear-cut case of two obviously similar marks. It would have made at least as much sense for the Board to find no confusing similarity, as the cited mark contained so much distinguishing material. The decision makes plain that trying to distinguish a pending application by use of a hashtag is not a winning strategy.